Monday, October 19, 2009

New USPTO Director David Kappos Comments on Fraud and Other TM Issues

David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, spoke at the AIPLA Annual Meeting in Washington, DC on October 15, 2009. His full remarks may be found here. Many of his comments dealt with patent-related issues, but he also had a few things to say about the trademark side of the PTO:

We’ve started on an ambitious project to modernize our TM IT systems. Our goal is for practitioners to be able to keep dockets on-line, have real time access to application and registration files, receive reminders and updates from the USPTO and have web services tailored to a practitioners’ level of expertise.

We’re working with the Trademark Public Advisory Committee on outreach to the community to hear what functions you would like on the site.

In another positive step for Trademarks, the CAFC decision in the Bose case ended what I think was a too aggressive and too broad interpretation of fraud on the TM office. The CAFC have given us good guidance in the Bose decision. Now we need to apply this guidance in the context of our use-based TM system.

As a practical matter, the Office is seeing an increasing number of applications with huge lists of good and services, in both use and intent-to-use cases. Examining attorneys have a limited set of legal and practical tools to deal with such applications. And a use-based trademark system falls apart if the statements of use are unreliable.

I have asked our TM management to engage trademark owners and the trademark bar in discussions on this matter. We look forward to reaching a long-term solution that works for the Office and the applicant community.

The Director's last two comments are the ones I find most interesting. Is it time to require a specimen of use for every item listed in the Section 1(a) identification of goods/services?.

It is time for us to acknowledge that the treaties/laws that allow Section 44/66 applications are inconsistent with a system that is otherwise use-based. Virtually all of the applications with massive laundry lists of goods/services are by foreign applicants seeking to import their home-country registration with no bona fide intent to offer the vast majority of the goods/services in the U.S.

These applications are creating frequent 2(d) objections that effectively allow the foreign applicants to reserve rights in a mark.

The USPTO's development of an even-handed system to spot check for additional specimens during the application process sounds like a less burdensome and more cost-effective way to improve the situation.